DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/13/2026 has been entered.
Claim Interpretation
Regarding limitations recited in claims 2-5 and 7-27 which are directed to a manner of operating the disclosed microfluidic apparatus, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Regarding the method limitations recited in claim(s) 2-5 and 7-27 the examiner notes that even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2, 5, 7-17, and 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (Low voltage electrowetting-on-dielectric platform using multi-layer insulators), in view of Cahill et al. (Reversible electrowetting on silanized silicon nitride) and Wang et al. (US 2011/0220505 A1, cited in IDS filed 04/23/2024).
Regarding claim 2, Lin discloses a microfluidic apparatus (Fig. 2) comprising:
a conductive silicon substrate having at least one electrode configured to be connected to a voltage source (Fig. 2, see: stacked layers below CYTOP which includes Substrate, Silicon dioxide, Electrode, and Dielectric layer; pg. 466-467/2.2. Device fabrication, see: device fabricated on silicon wafer);
a cover having at least one electrode to be connected to the voltage source (Fig. 2, see: stacked layers above CYTOP which includes Acrylic and ITO);
at least one spacing element (Fig. 2, see: SU8 Gasket),
wherein the conductive silicon substrate and the cover are substantially parallel to one another and joined together by the spacing element so as to define an enclosure configured to hold a liquid (Fig. 2, see: rectangular volume containing the Water droplet and Oil); and
a microfluidic circuit disposed within the enclosure, the microfluidic circuit comprising a flow channel configured to receive a fluidic medium from a media source (Fig. 4, see: droplets being dispensed into the channel from the reservoir),
wherein the conductive silicon substrate has a droplet actuation surface that defines, in part, the enclosure, the droplet actuation surface having an inner dielectric layer (Fig. 2, see: Dielectric layer defines the lower surface of the rectangular volume) and an outer hydrophobic layer (Fig. 2, see: CYTOP), and
wherein the enclosure is configured to apply an electrowetting force to the fluidic medium in contact with the droplet actuation surface of the substrate when a voltage is applied from the voltage source to the at least one electrode of the substrate and/or the cover to transfer a droplet in the flow channel (Fig. 4, Fig. 6, pg. 467/2.3. Control and detection, see: AC power was produced with a function generator (Agilent 33250A)).
Lin does not explicitly disclose outer hydrophobic layer comprises self-associating molecules covalently bonded to the inner dielectric layer
Cahill teaches an analogous electrowetting device comprising a plurality electrodes coated with a dielectric layer having a self-assembled hydrophobic octadecyl-trichlorosilane (OTS) monolayers covalently bound thereon (Fig. 1; pg. 381-382/2. Methods). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to select covalently bound OTS layers as the hydrophobic material in the device disclosed by Lin, as taught by Cahill, in order to decrease the contact angle hysteresis thereby allowing droplets to move more easily on the surface (Cahill: pg. 385/4. Conclusions). Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Modified Lin does not explicitly disclose a plurality of sequestration pens each having a single opening in fluidic communication with the flow channel.
Wang teaches an analogous EWOD microelectrode array (Fig. 3A) comprising a microfluidic transportation path (340) couple to a plurality of reservoirs (320, 330), wherein each of the reservoirs comprises one interface with the transportation path (Fig. 3B). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate a plurality of reservoirs into the device disclosed by modified Lin, as taught by Wang, in order to provide for improved loading accuracy and reduce messy sample loading by human error (Wang: [0074]).
Regarding claim 5, modified Lin further discloses the conductive silicon substrate comprises an array of electrodes (Lin: Fig. 1, Fig. 4, Fig. 6).
Regarding claim 7, modified Lin further discloses the inner dielectric layer comprises a first layer of dielectric material and a second layer of dielectric material (Lin: Fig. 2, see: Silicon dioxide, Dielectric layer; pg. 466/2.1. High dielectric constant material).
Regarding claim 8, modified Lin further discloses the first layer of dielectric material has a first surface and an opposing surface, wherein the first surface of the first layer adjoins the second layer (Lin: Fig. 2, see: Silicon dioxide, Dielectric layer; pg. 466/2.1. High dielectric constant material), and wherein the opposing surface is covalently bound to the hydrophobic layer (see: rejection of claim 2 above).
Regarding claims 9 and 10, modified Lin further discloses the first layer of dielectric material comprises aluminum oxide or hafnium oxide (Lin: pg. 466/2.1. High dielectric constant material, see: Al2O3).
Regarding claims 11 and 12, modified Lin further discloses the second layer of dielectric material comprises silicon oxide or silicon nitride (Lin: pg. 466/2.1. High dielectric constant material, see: SiO2, Si3N4).
Claims 13 and 14 are product-by-process claims, patentability of said claim is based on the recited product and does not depend on its method of production. Since the product in claims 13 and 14 is the same as product disclosed by modified Lin, as set forth above, the claim is unpatentable even though the Lin product was made by a different process. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Regarding claims 15 and 16, modified Lin does not explicitly disclose a third layer comprising silicon oxide having a first surface and an opposing surface, wherein the first surface of the third layer adjoins the opposing surface of the first layer, and wherein the opposing surface of the third layer is covalently bound to the outer hydrophobic layer.
As the inner dielectric layer thickness is a variable that can be modified, among others, by adjusting said number of layers, with said inner dielectric layer thickness increasing as the number of layers is increased, the precise number of layers would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed number of layers cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the number of layers in the apparatus of modified Lin to obtain the desired inner dielectric layer thickness (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). Additionally, mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 124 USPQ 378, 380 (CCPA 1960). Further, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim 17 is a product-by-process claim, patentability of said claim is based on the recited product and does not depend on its method of production. Since the product in claim 17 is the same as product disclosed by modified Lin, as set forth above, the claim is unpatentable even though the modified Lin product was made by a different process. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Regarding claim 22, modified Lin further discloses each sequestration pen (Wang: Fig. 3B) comprises an isolation structure defining an isolation region (see: reservoir structure 331) and a connection region fluidically connecting the isolation region to the flow channel (see: notch in reservoir structure which interfaces with electrode 371).
Regarding claim 23, modified Lin further discloses the isolation region of each sequestration pen extends from the conductive silicon substrate to the cover (Wang: Fig. 11, see: reservoir 1160 extends through the entire height of the channel).
Regarding claim 24, modified Lin further discloses each connection region is configured such that a maximum penetration depth of a flow of fluidic medium flowing from the flow channel into the sequestration pen does not extend into the isolation region (Wang: Fig. 3B, see: notch in reservoir structure which interfaces with electrode 371).
Regarding claim 25, modified Lin further discloses the single opening of each sequestration pen opens laterally from the flow channel (Wang: Fig. 3B, see: notch in reservoir structure 331 which interfaces with electrode 371).
Regarding claim 26, modified Lin further discloses the at least one electrode of the conductive silicon substrate underlays both the flow channel and the sequestration pens (Wang: Fig. 3B, see: electrode 371 which interfaces with notch in reservoir structure 331 and extends out from the notch to the transportation path).
Claim(s) 3 and 18-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (Low voltage electrowetting-on-dielectric platform using multi-layer insulators), in view of Cahill et al. (Reversible electrowetting on silanized silicon nitride) and Wang et al. (US 2011/0220505 A1, cited in IDS filed 04/23/2024), as applied to claim 2 above, in further view of Shah et al. (EWOD-driven droplet microfluidic device integrated with optoelectronic tweezers as an automated platform for cellular isolation and analysis).
Regarding claim 3, modified Lin does not explicitly disclose the conductive silicon substrate comprises amorphous silicon.
Shah teaches an analogous EWOD-driven droplet microfluidic device formed on an amorphous silicon layer (Fig. 2, see: a-Si:H). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to select amorphous silicon as the material for the substrate in the device disclosed by modified Lin, as taught by Shah, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 18, Lin further discloses the apparatus comprises an electrowetting module to perform a microfluidic operation in response to an applied voltage at a frequency, wherein the electrowetting module comprises the dielectric stack of the conductive silicon substrate (Fig. 2, see: (electrowetting-on-dielectric) EWD device).
Modified Lin does not explicitly disclose the electrowetting module being configured to receive an output from a dielectrophoresis module which performs a first microfluidic operation in response to a first applied voltage at a first frequency.
Shah teaches an analogous EWOD-OET integrated device comprising an OET chip disposed between two EWOD chips (Fig. 2a; pg. 1736-1738/Discussion of results, see: OET and DEP are used interchangeably). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate an OET chip into the EWOD device disclosed by modified Lin, in order to provide for precise and independent control of multiple droplets while minimizing cross-contamination (Shah: pg. 1732-1733/Cell studies in droplet microfluidics).
Regarding claim 19, modified Lin further discloses a bridge between the first module and the second module (Shah: Fig. 2a, see: interface between EWOD chips and OET chip).
Regarding claim 20, modified Lin further discloses the bridge does not perform the first or second microfluidic operation (Shah: Fig. 2a, see: absence of electrodes at interface between EWOD chips and OET chip).
Regarding claim 21, modified Lin further discloses the bridge is an electrically neutral zone (Shah: Fig. 2a, see: absence of electrodes at interface between EWOD chips and OET chip).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (Low voltage electrowetting-on-dielectric platform using multi-layer insulators), in view of Cahill et al. (Reversible electrowetting on silanized silicon nitride) and Wang et al. (US 2011/0220505 A1, cited in IDS filed 04/23/2024), as applied to claim 2 above, in further view of Shah et al. (EWOD-driven droplet microfluidic device integrated with optoelectronic tweezers as an automated platform for cellular isolation and analysis) and Hsu et al. (Phototransistor-based optoelectronic tweezers for dynamic cell manipulation in cell culture media).
Regarding claim 4, modified Lin does not explicitly disclose the conductive silicon substrate comprises a phototransistor array.
Shah teaches an analogous EWOD-OET integrated device comprising an OET chip disposed between two EWOD chips (Fig. 2a; pg. 1736-1738/Discussion of results, see: OET and DEP are used interchangeably). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate an OET chip into the EWOD device disclosed by modified Lin, in order to provide for precise and independent control of multiple droplets while minimizing cross-contamination (Shah: pg. 1732-1733/Cell studies in droplet microfluidics).
Hsu teaches an analogous optoelectronic tweezers comprising a phototransistor-based OET chip comprising a phototransistor array (Fig. 1). It would have been obvious to one having ordinary skill in the art to select a phototransistor array as the OET chip in the device disclosed by modified Lin, as taught by Hsu, in order to provide the crucial ability to operate in cell culture media, while retaining the advantage of standard OET (Hsu: pg. 171/Conclusion).
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (Low voltage electrowetting-on-dielectric platform using multi-layer insulators), in view of Cahill et al. (Reversible electrowetting on silanized silicon nitride) and Wang et al. (US 2011/0220505 A1, cited in IDS filed 04/23/2024), as applied to claim 2 above, in further view Chae et al. (Optimum thickness of hydrophobic layer for operating voltage reduction in EWOD systems)
Regarding claim 27, modified Lin does not explicitly disclose a tilting device configured to position the flow channel above the plurality of sequestration pens to assist the transfer of fluidic medium into the plurality of sequestration pens.
Chae teaches an analogous EWOD device and method comprising a EWOD chip’s Cytop and Teflon layers being coupled to a tilt stage in order to investigate contact angle hysteresis (pg. 14/col. 1/para. 2). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate a tilt stage in the device disclosed by modified Lin, in order to determine an optimal thickness of the hydrophobic layer on the operating voltage in EWOD actuation (Chae: pg. 16/col. 1/para. 1).
Response to Arguments
Applicant's arguments filed 01/13/2026 have been fully considered but they are not persuasive.
The Examiner respectfully disagrees with the Applicant’s assertion that Lin fails to teach or suggest at least one electrode in the cover. Assuming arguendo that the ITO ground electrode taught by Lin is not directly coupled to the voltage source with a wire/lead, the ITO layer is explicitly taught as functioning as a ground electrode. Therefore, it is electrically connected to the voltage source as being part of the same electrical circuit.
The amendments reciting “a voltage is applied from the voltage source to the at least one electrode of the substrate and/or the cover…” do not distinguish the instant claims over the cited prior art as the recitation of the functional limitations in the alternative (see: “and/or”) does not require the voltage source to be directly coupled to the ITO electrode with a wire/lead. Further, the Applicants are advised, amending the limitation to recite “and” would not move the claims to be commensurate with the Applicant’s position for the same reasons explained above.
The Applicant’s remaining arguments with respect to claim(s) 2-5 and 7-27 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/ROBERT J EOM/ Primary Examiner, Art Unit 1797